• Home
  • About
    • Client Reviews
    • Patent Samples
    • Accolades
    • About Firm
    • Technologies
    • FAQs
  • Services
    • Patent
      • Patent Application
      • Patent Defense
      • Patent Enforcement
    • Trademark
      • Trademark Search
      • Trademark Application
      • Trademark Enforcement
      • Trademark Defense
    • Licensing
    • Worldwide IP
    • Risk Management
    • Due Diligence
  • Industries
    • Browse Patent Samples
    • Automotive Patents
    • Construction Patents
    • Consumer Products Patents
    • Electronics Patents
    • Food, Beverage, & Other Culinary Patents
    • Manufacturing Patents
    • Medical Products & Devices Patents
    • Optics Patents
    • Software & App Patents
    • Tools & Equipment Patents
  • Learning Resources
    • Videos on Patents
    • Search 180+ Articles
      • Patent process
        • Overview of Patent Process
          • Patent process timeline and major milestones
          • Patent Process: Invention to Patent Granted (Comprehensive)
          • Patent process, overall steps and procedures
        • Overview of the examination process within the USPTO
          • Highs and lows of securing patent protection for your invention
          • What is the Patent Office procedure after filing a patent application?
        • Benefits of a Patent Search
          • What is a patent search and How to do it?
        • Patent attorneys, agents and the USPTO can help with the patent process
        • USPTO Website
      • Invention Agreements
        • What is an NDA and when to use them?
        • How to use a contract to protect your invention?
        • Working with others without losing your IP rights
        • Patent Assignments for Independent Contractors
        • Losing Invention Rights When Hiring or Collaborating with Others
        • Avoid Problems: Get an Invention Assignment Agreement
      • Protect Inventions
        • Misconceptions of Provisional Patent Applications
        • Do you need to get your patent attorney to sign an NDA?
        • Can a confidentiality agreement protect me like a patent application?
        • Four types of intellectual property to protect your idea and how to use them
          • Overview of Patents and Intellectual Property
          • Patent protection benefits and why every inventor should consider getting one
          • 8 tips to successfully protect your idea
          • Benefits of Patent Protection
          • Best uses for design patents
        • Reasons to only market your invention after securing patent pendency
          • Dangers of 1 yr grace period under first-inventor-to-file system
          • File a patent application before telling others about the invention
        • Risks and benefits of securing software patent protection
          • Strategy to overcome patentable subject matter rejection
        • Pros and cons of filing a continuation-in-part application
          • What is a continuation patent application?
      • How Patent Applications Work: the Basics
        • How to respond to an office action?
        • Request for non-publication of a patent application
        • Anatomy of a Patent Document
        • How to write a broad patent application?
        • Design patents: pros and cons
      • Patent costs
        • How much does it cost to get a utility patent?
        • Provisional Patent Application: Cheap Alternative?
        • Patent Cost Framework and cash flow
        • Provisional patent application: a cheap option?
        • Cheap provisional patent applications
      • Patent infringement
        • Basics of writing a patent claim for a patent application
        • Patent Marking: Everything you wanted to know
        • Avoiding Patent Infringement
        • Can I Copy My Competitor’s Product?
        • Can I Copy My Competitor’s Product? (Design Patent)
      • Worldwide patents
        • Pros and cons of securing worldwide patent protection and their steps
        • Foreign patent filing to secure protection in other countries
      • Responding to Office Actions
        • Overview of Office Actions
      • Trademarks
        • Trademark Registration: common law, state and federal
        • How to obtain a federal trademark registration?
        • How to select a trademark?
          • Protect your idea when pitching to an investor, potential licensee, or buyer
  • Schedule Consultation
  • Contact

Top-Rated Orange County Patent Lawyer | Helping Inventors in Orange County, Los Angeles County & Beyond | OC Patent Lawyer, Irvine CA

Orange County Patent Attorney

(949) 433-0900
You are here: Home / Archives for Patent Infringement / Patent Infringement Defenses / Inequitable conduct

Inequitable conduct

Inequitable conduct is a defense to patent infringement and occurs when the applicant for patent breaches the applicant’s duty of condor and good faith to the USPTO in prosecuting the patent application.

Browse related articles below.

Patent unenforceable for failure to disclose info to Patent Office

November 3, 2014 by James Yang

Updated: January 20, 2022 Bottom Line: Inequitable conduct is an often raised defense but rarely successful.  As such, the courts have been shifting the burden of providing inequitable conduct so that the courts can get to the merits of the case more often.  The failure to disclose material information to the patent office (preferably through an information disclosure … [Read more...]

Inequitable conduct defense successful despite high standard

October 23, 2014 by James Yang

Inequitable conduct is a defense to patent infringement to avoid liability for patent infringement.  However, inequitable conduct also offers a way to introduce unfavorable facts about the patent owner, inventors, etc. to paint the plaintiff as a bad actor and not as someone that has helped society in bringing forth the invention protected by the patent.  It is a defense that … [Read more...]

Lying to the Patent Office invalidates patent

October 24, 2013 by James Yang

Lying to the Patent Office invalidates patent With Therasense, the Federal Circuit took a stance indicating that a charge of inequitable conduct would be very difficult to win.  Inequitable conduct invalidates the patent.  Inequitable conduct is a serious charge that is directed to the character of a person.  Plus, defendants or alleged infringers were using the claim of … [Read more...]

Patent Office provides ways to late pay fees to keep a patent alive

October 16, 2013 by James Yang

The patent office provides due dates for various matters.  Some of the due dates can be extended with payment of an extension fee.  Responses or payment of maintenance fees can be paid even after all of the extensions have passed upon petition to the Patent Office.  There are two types of petitions.  (PTO Forms). One is based on an assertion that non-payment or non-response was … [Read more...]

No deliberate decision to withhold material information

October 15, 2012 by James Yang

Background on inequitable conduct Charges of inequitable conduct used to be favored by accused patent infringers even though these types of charges had a very low success rate because charges of inequitable conduct allowed the accused infringer to portray the patent owner as bad and undeserving of a favorable judgement.  The Federal Circuit disfavored claims of inequitable … [Read more...]

Duty to disclose owed by everyone substantively involved

October 7, 2011 by James Yang

Once an application is filed, everyone substantively involved in the filing of the patent application owes a duty of candor and good faith to the Patent Office.  This duty requires individuals to disclose (i.e., duty to disclose) relevant information to the Patent Office that is related to the invention, even information that might render the claimed invention unpatentable. … [Read more...]

Federal Circuit Resets the Rules for Inequitable Conduct

June 6, 2011 by James Yang

Updated: January 20, 2022 Inequitable conduct is a charge made by defendants in a patent infringement lawsuit to avoid liability for infringement of a patent. Inequitable conduct occurs when an applicant or someone associated with the filing of a patent application misleads a patent examiner that it warrants the court to make the patent unenforceable. Over a period of … [Read more...]

Professional Profile

James Yang Business Patent Attorney

James Yang, Patent Attorney

James Yang is a patent attorney whose practice encompasses all area of intellectual law including patents, trademarks, copyrights and trade secrets. He serves clients within Orange County and Los Angeles County, California.

About James Yang

Popular Posts

  • Patent process overview
  • Patent process explained
  • How much does a patent cost?

New Book Release

Navigating the Patent System - new book by Orange County patent attorney, James Yang

Navigating the Patent System: Learn the patent process and strategies to protect your invention

Read for Free
Buy at Amazon

Peer Recognition

top attorney patent application
client choice patent application
Rated by Super Lawyers
AV Preeminent rating

RECEIVE PATENT ARTICLES

Stay up to date on major changes and get tips on the patent process.

We respect your privacy.

Popular Posts

Patent process overview
Patent process explained
How much does a patent cost?
Trademark process and costs
Patent process and costs

 

Services

  • Patent Prosecution Services
    Patent Defense Services
    Trademark Prosecution Services
    See All Services

Industries

Automotive Patents
Consumer Products Patents
Culinary Patents
Manufacturing Patents
Medical Patents
Optics Patents
Software & App Patents
See All Industries

Contact

James Yang
OC Patent Lawyer
2372 Morse Ave., Suite #178
Irvine, CA 92614
Tel: (949) 433-0900

Connect

  • Facebook
  • LinkedIn

Sitemaps

Sitemap: Pages | Sitemap: Posts

Terms of Use and Privacy Policy

By accessing this blog, you agree that no attorney-client relationship is formed except by a subsequent written retainer agreement. Also, you agree to not send confidential information unless directed by me to do so. The information posted on this blog is legal information and not legal advice.
Complete Terms of Use
Complete Privacy Policy

ADA Compliance

OC Patent Lawyer aims to ensure that its services are accessible to people with disabilities.
Accessibility Statement

Service Area

From our office in Irvine, California, we serve clients from all areas within Orange County and Los Angeles County, California.

© 2022 · James Yang, Your Entrepreneur and Mid-Size Business Patent Attorney